UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Palo Alto Networks, Inc.
`Petitioner
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`v.
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`Finjan, Inc.
`Patent Owner
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`U.S. Patent No. 8,141,154
`Filing Date: June 14, 2010
`Issue Date: March 20, 2012
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`Title: System and Method for Inspecting
`Dynamically Generated Executable Code
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`Inter Partes Review No. 2015-01979
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`Petitioner’s Objections to Evidence Under 37 C.F.R. § 42.64
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`Palo Alto Networks, Inc.
`Petitioner
`
`v.
`
`Finjan, Inc.
`Patent Owner
`
`U.S. Patent No. 8,141,154
`Filing Date: June 14, 2010
`Issue Date: March 20, 2012
`
`Title: System and Method for Inspecting
`Dynamically Generated Executable Code
`
`
`
`Inter Partes Review No. 2015-01979
`
`Petitioner’s Objections to Evidence Under 37 C.F.R. § 42.64
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Petitioner Palo Alto Networks, Inc. (“Petitioner”) objects under the Federal
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`Rules of Evidence and 37 C.F.R. § 42.64(b)(1) to the admissibility of the following
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`exhibits submitted by Finjan, Inc. (“Patent Owner”) in support of its Patent Owner
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`Response: Ex. 2002, the Declaration of Dr. Nenad Medvidovic (“Medvidovic
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`Declaration”); Ex. 2004,
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`the Declaration of S.H. Michael Kim (“Kim
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`Declaration”); Ex. 2009, Definition of kernel32.dll; Ex. 2011, Wikipedia definition
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`of type signature; Ex. 2012, Microsoft webpage regarding Detours; and Ex. 2013,
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`the Stackoverflow webpage.
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`
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`Patent Owner served its Patent Owner’s Response on July 12, 2016. Paper
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`No. 22. Petitioner’s objections are timely under 37 C.F.R. § 42.64(b)(1). By
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`serving these objections on Patent Owner, Petitioner reserves its right to file
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`motions to exclude these exhibits under 37 C.F.R. § 42.64(c).
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`I. MEDVIDOVIC DECLARATION (EX. 2002)
`Petitioner objects to the admissibility of the Medvidovic Declaration under
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`FRE 702 because it contains opinions that are conclusory, do not disclose
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`supporting facts or data, or are based on unreliable facts, data, or methods. For
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`example, Dr. Medvidovic opines that certain Websense products are covered by
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`claims of the ’154 patent based on his review of Patent Owner’s made for litigation
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`infringement contentions. Ex. 2002, ¶129. Furthermore, several of the infringement
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`charts relied on by Dr. Medvidovic cover only a subset of the claims at issue in this
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`1
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`IPR. Exs. 2015-17. Accordingly, the opinions contained in the Medvidovic
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`Declaration are not based on sufficient facts or data, and are not the product of
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`reliable principles and methods and should be excluded under FRE 702. Exs. 2002-
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`03. Dr. Medvidovic is also unqualified as an expert to provide opinions from the
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`perspective of a person of ordinary skill in the art, rendering the Medvidovic
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`Declaration inadmissible under FRE 702. The Medvidovic Declaration also
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`contains opinions that are irrelevant, confusing, and of minimal probative value
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`under FRE 401, 402, and 403. Finally, the Medvidovic Declaration relies on
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`exhibits that are inadmissible and unreliable for the reasons set forth below.
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`II. KIM DECLARATION (EX. 2004)
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`Petitioner objects to the Kim Declaration because it does not introduce
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`evidence of Mr. Kim’s personal knowledge of the subject matter of the testimony
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`contained therein, rendering such testimony inadmissible under FRE 602. For
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`example, the Kim Declaration states that Mr. Kim has been IP counsel at Patent
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`Owner since March 2015, yet Mr. Kim testifies regarding events that occurred
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`prior to that date without showing how Mr. Kim gained personal knowledge of
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`those events. In addition, the Kim Declaration contains testimony regarding the
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`terms of several Patent Owner license agreements, but Mr. Kim was not part of the
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`negotiation or execution of the licenses. The Kim Declaration produces no
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`evidence of Mr. Kim’s personal knowledge of these licenses.
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`2
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`The Kim Declaration is also inadmissible hearsay under FRE 801 and 802.
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`The Kim Declaration is also inadmissible under FRE 401, 402, and 403 as
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`irrelevant, prejudicial, misleading, and of minimal probative value.
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`Petitioner also objects to the admissibility of the Kim Declaration under FRE
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`702. The Kim Declaration offers inadmissible expert testimony because the
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`opinions contained in his Declaration are conclusory, do not disclose supporting
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`facts or data, are biased and unreliable, and the Kim Declaration provides no basis
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`to support Mr. Kim’s qualifications as an expert. Accordingly, Mr. Kim’s opinions
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`are inadmissible under FRE 702.
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`III. KERNEL32.DLL (EX. 2009)
`Petitioner objects to the admissibility of the “kernel32.dll” article under FRE
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`401, 402, and 703. Patent Owner improperly relies on the kernel32.dll article to
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`support the understanding of a person of ordinary skill in the 2005 timeframe, but
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`the kernel32.dll article is a webopedia.com definition retrieved on July 12, 2016.
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`Ex. 2009. Accordingly, it is irrelevant and not the type of evidence reasonably
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`relied upon by a person of ordinary skill during the relevant time period. The
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`kernel32.dll article is also inadmissible hearsay under FRE 801 and 802, and lacks
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`authentication under FRE 901.
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`3
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`IV. WIKIPEDIA DEFINITION OF TYPE SIGNATURE (EX. 2011)
`Petitioner objects to the admissibility of the Wikipedia “definition of type
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`signature” under FRE 401, 402, and 703. Patent Owner improperly relies on the
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`Wikipedia definition of type signature to support the understanding of a person of
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`ordinary skill in the 2005 timeframe, but the Wikipedia definition of type signature
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`was retrieved on July 12, 2016 and last modified on June 17, 2016. Ex. 2011.
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`Accordingly, it is irrelevant and not the type of evidence reasonably relied upon by
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`a person of ordinary skill during the relevant time period. The Wikipedia definition
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`of type signature is also inadmissible hearsay under FRE 801 and 802, and lacks
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`authentication under FRE 901.
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`V. MICROSOFT WEBPAGE REGARDING DETOURS (EX. 2012)
`Petitioner objects to the admissibility of the “Microsoft webpage regarding
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`Detours” under FRE 401, 402, and 703. Patent Owner improperly relies on Ex.
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`2012 to support the understanding of a person of ordinary skill in the 2005
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`timeframe, but the Microsoft webpage was retrieved on July 12, 2016. Ex. 2012.
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`The webpage also states, “Established: January 16, 2002.” Ex. 2012. However, the
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`webpage appears to have been updated since that time and the webpage provides
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`no indication when the information cited by Patent Owner was published on the
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`website. Accordingly, Ex. 2012 is irrelevant and not the type of evidence
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`reasonably relied upon by a person of ordinary skill during the relevant time
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`4
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`period. The Microsoft webpage regarding Detours is also inadmissible hearsay
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`under FRE 801 and 802, and lacks authentication under FRE 901.
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`VI. STACKOVERFLOW WEBPAGE (EX. 2013)
`Petitioner objects to the admissibility of the “Stackoverflow webpage” under
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`FRE 401, 402, and 703. Patent Owner improperly relies on the Stackoverflow
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`webpage to support the understanding of a person of ordinary skill in the 2005
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`timeframe, but the webpage was retrieved on July 12, 2016, and the information on
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`the webpage is dated 2010 and 2012. Ex. 2013. Accordingly, it is irrelevant and
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`not the type of evidence reasonably relied upon by a person of ordinary skill during
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`the relevant time period. The Stackoverflow webpage is also inadmissible hearsay
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`under FRE 801 and 802, and lacks authentication under FRE 901.
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`5
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`Dated: July 19, 2016
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8000
`Fax: (202) 842-7899
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`By:
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`Respectfully submitted,
`COOLEY LLP
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`6
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`Petitioner’s Objections to Evidence
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`IPR2015-01979 (U.S. Patent No. 8,141,154)
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on July 19,
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`2016, a complete and entire copy of this Petitioner’s Objections to Evidence
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`Under 37 C.F.R. § 42.64, was served by filing this document through the Patent
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`Review Processing System and via electronic mail upon the following counsel of
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`Jeffrey H. Price
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Phone: (212) 715-7502
`Fax: (212) 715-8302
`jprice@kramerkevin.com
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`By:
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`
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`/Orion Armon/
`Orion Armon
`Reg. No. 65,421
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`
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`record for Patent Owner:
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`
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`James Hannah
`KRAMER LEVIN NAFTALIS &
`FRANKEL LLP
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`990 Marsh Road
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`Menlo Park, CA 94025
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`Phone: (650) 752-1712
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`Fax: (650) 752-1812
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`jhannah@kramerlevin.com
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`Michael Kim
`Finjan, Inc.
`2000 University Ave., Ste. 600
`E. Palo Alto, CA 94303
`Phone: 650.397.9567
`mkim@finjan.com
`USPTO Reg. No. 40,450
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`134365455 v2
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